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The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Friday, 21 April 2017

After an invigorating session on doctrine of equivalents (which the AmeriKat plans to write up), the final panel session of the day in the patents track was on IP remedies. Although sometimes forgotten in the rough of tumble of validity and infringement, it is the remedies which are the big motivator - on both sides - in litigation. Laura Whiting reports:

"Nicholas Groombridge, introducing the
panel, commented that in his day, remedies was not the most
popular subject. The focus of
practitioners, at least in patent matters, was usually on validity and
infringement and then, almost as an afterthought, on damages. However, that seems to have changed.

Hon Mr Justice Birss opened on the role of legislators and the courts
in "crafting appropriate IP remedies" and the extent to which judges
must step in to exercise discretion where legislators have (inadvertently) left
gaps which need to be filled. He noted
that although substantive IP laws around the world are fairly similar, the
remedies available to litigants differ widely from jurisdiction to jurisdiction
and are often subject to judicial discretion.
For example, final injunctions are not granted uniformly, even in common
law jurisdictions where they are understood to be equitable remedies: in the
UK, the position is that the successful claimant is generally regarded as
entitled to an injunction (Vestergaard);
in the US, by contrast, that is no longer the case following eBay v MercExchange.

Mr Justice Birss

Birss J explained that judicial discretion can be useful in
order to fill the gaps left by legislators or where the issue at hand had never
been envisaged by the legislature. By
way of example, in the UK Cartierdecision, legislation had paved the way for blocking orders in the context of
copyright infringement (s97A CDPA 1988), but that jurisdiction was extended by
the judge to cover trade mark infringement.
A further example was publicity orders, where the UK courts had extended
the provisions of Art 15 of the Enforcement Directive to entitle the defendant to
such an order (as opposed to the claimant) as it was considered appropriate to
do so.

Birss J gave the example of SEPs (and in particular FRAND
obligations) as a situation where judges were left to exercise their discretion
in the absence of any special legislation. The regulations of the various SSOs leave the
majority of the questions on FRAND outstanding, especially on the issue of how
a FRAND royalty should be set. So, the
judges must exercise their jurisdiction to answer these questions.

Richard Vary

Richard Varymentioned that judicial discretion can lead to unpredictable
outcomes but this is also a pragmatic method of legislating as some space for
discretion can be required – for example in the discussions around the Rules of
Procedure for the UPC, there was not perfect agreement between the stakeholders
as to how the procedure should work.
Therefore drafting the Rules in a manner that allowed for future judicial
discretion was a way forward that allowed consensus to be reached.

Andrew Bowler agreed that judicial
flexibility was a good thing, but commented that providing for a final
injunction order to be truly optional would in his opinion move too far towards
a situation where an infringer had little to fear from a patentee other than a
judicially enforced compulsory licence in certain circumstances. He acknowledged that there were particular
problems in second medical use cases in defining an appropriate scope for an
injunction.

Richard then presented on his experience (as a district judge) of
small claims in IP courts being brought by individuals with no legal
qualifications. The UK's Intellectual
Property Enterprise Court (IPEC) small claims track is for disputes of less
than £10,000 concerning IP rights (other than patents). He suggested that the most important factor
in making the small claims track work is its simple procedures. There is no need for interim applications or
hearings, nor disclosure (which, in his view, may not be needed even in larger
cases). It also requires a more
interrogatory (sometimes interventional) judge than is traditional in the UK
system to compensate for the lack of legal experience of the litigants.

Other important factors and speed and (low) cost. A year to resolve a simple copyright dispute
is too long – Richard considers this ought to be done in a matter of months
(perhaps 4 or so) – but of course, litigants sometimes slow the process
down. In the IPEC small claims track,
litigants in person are not discouraged because of the risk of adverse costs
awards since the costs are strictly limited and usually do not include the
other side's legal costs.

Nicholas asked what has been learned from the small claims
system that can be applied to commercial IP cases. Richard identified the Shorter Trials
Scheme. He also suggested that the
removal of the UK costs regime would make the UK more attractive to litigants
and suggested that the German system was more appealing. Birss J commented that another important
factor in the success of the IPEC was that the judges are specialists (to some
degree) in IP law – that is especially
important when the litigants are not specialists and may not be represented by
specialist lawyers. The judges have also
learned to "say no" to litigants and lawyers on procedural questions,
which enables a smoother and more streamlined procedure.

Jill Ge

Yijun (Jill) Ge next clearly and
concisely explained some of the recent developments in obtaining damages in
China. Previously, the damages regime
was purely statutory and typically provided for very low damages (with an upper
limit of RMB 1 million - about £113,000).
However, recently, the Beijing IP Courts have made an award of RMB 49
million (about £5.5 million) in respect of patents on USB technology. This was assessed on the basis of (i) the
plaintiff's lost sales and (ii) the defendant's gains from selling the
infringing products. The court ordered
the defendant to produce books of accounts and when they refused, assumed the
plaintiff's assessment of quantum.

In practice, the Chinese courts' damages assessments are still relatively
rough. In the damages area there is
still some work to be done, but Yijun is hopeful for further caselaw
developments to clarify the position.

Andrew commented that
the UK experience is that the courts are able to accurately assess damages even
in the absence of the full financial picture.
He commented however that some companies may consider that when facing
the risk of compensatory damages only, it may sometimes be worthwhile to
infringe patents. In his view it may be
worth looking for inspiration to copyright cases where additional damages have
been awarded in order to further deter infringement.

Klaus Grabinski noted that in Germany injunctive relief is
automatic, but this is usually accompanied by an order to render accounts. If that is not done, then the penalty can be
quite high. However, it is relatively
rare for a case to progress to the assessment of damages – the plaintiff usually
obtains all the information necessary to assess the quantum of the infringer's
profits through the disclosure order and can usually settle at this stage.

Finally,Penny Gilbert spoke on the UK
"Arrow" declaratory jurisdiction, which was recently revisited in the
FKB v Abbvie case. The panel debated whether the UPC would have
competency to consider such declaratory relief, with some scepticism being expressed given the court's exclusive competence."

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